Ex Parte Valley

Board of Patent Appeals and Interferences

Jan 31, 2011

10654594 (B.P.A.I. Jan. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEROY R. VALLEY
____________

Appeal 2010-001361
Application 10/654,594
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001361
Application 10,654,594

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 21. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).

BACKGROUND
Appellant’s invention is directed to a system and method for
traceability and accountability in a healthcare environment.
Claim 1 is illustrative:
1. A method for managing health services, comprising:
receiving a patient identifier that identifies a patient;
receiving a caregiver identifier that identifies an individual
performing a health service;
receiving a service identifier that identifies the health service
performed for the patient;
associating the patient identifier with the caregiver identifier
and the service identifier; and
storing the patient identifier, the caregiver identifier, and the
service identifier in a data processing system.

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Brown US 4,857,713 Aug. 15, 1989
White US 7,236,936 B2 Jun. 26, 2007

Appellant appeals the following rejections:
Claims 1 to 7 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
Appeal 2010-001361
Application 10,654,594

3
Claims 1 to 3, 8 to 10 and 15 to 17 under 35 U.S.C. §102(b) as
anticipated by Brown.
Claims 4 to 7, 11 to 14 and 18 to 21 under 35 U.S.C. § 103(a) as
unpatentable over Brown in view of White.

ISSUE
Did the Examiner err in rejecting claims 1 to 7 under 35 U.S.C. § 101
because claim 1 recites the step of storing a patient identifier, a caregiver
identifier and a service identifier in a data processing system?
Did the Examiner err in rejecting claim 1 as anticipated by Brown
because Brown does not disclose receiving a caregiver identifier that
identifies an individual performing a health service?
Did the Examiner err in rejecting claims 4 to 7, 11 to 14 and 18 to 21
because the prior art does not render obvious sending a response indicating
whether any conflicts exist between the patient and the medication?

FACTUAL FINDINGS
We adopt the Examiner’s findings of fact related to the 35 U.S.C. §
103 rejection. Ans. 5.
We add the following factual findings:
Brown discloses a portable computer means 3 that checks its internal
file of physician’s instructions 6 to verify that the identified medication,
goods, service or procedure 2 has been prescribed for the identified patient
(col. 3, ll. 13 to 24). This disclosure relates to a service identifier and a
patient identifier but not a caregiver identifier.
Additional findings of fact may appear in the Analysis that follows.
Appeal 2010-001361
Application 10,654,594

4
ANALYSIS
Non-statutory subject matter
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the recitation of storing the various identifiers in a
data processing system ties the claim to a particular machine.. At best, the
recitation of storing identifiers in a data processing system implies the use of
a general purpose computer. Given that the body of the claim provides no
further insight into the workings of the computer, the phrase “data
processing system” suggests at best a nominal use of a general purpose
computer. See Gottschalk v. Benson, 409 U.S. 63, 72 (1972): “The general
purpose computer is designed to perform operations under many different
programs.” A nominal recitation of a general purpose computer is not an
express recitation of a particular machine. Thus, we do not find that the
claimed process is tied to a particular machine.
Also, the recitation of storing the identifiers in a “data processing
system” implies storing the recited identifiers in a computer environment.
The prohibition against patenting abstract ideas cannot be circumvented by
attempting to limit the use of the invention to a particular technological
environment or adding ‘insignificant post solution activity.’” Bilski, 130
S. Ct. 3218, 3230 (quoting Diamond v. Diehr, 450 U.S. 175, 191-192
(1981)). The phrase “data processing system,” suggests at best a nominal
use of a general purpose computer and imposes no meaningful limits on the
scope of the claim apart from describing a field in which to conduct the
process. A field-of-use limitation is insufficient to render an otherwise
patent-ineligible process patent-eligible. See Diehr, 450 U.S., 191 (1981).
Appeal 2010-001361
Application 10,654,594

5
Cf. SiRF Technology, Inc. v. International Trade Commission, 601 F.3d
1319, 1333 (Fed. Cir. 2010).
There is also no recitation of a transformation, expressly or inherently.
The subject matter of claim 1 is a series of instructions for receiving,
associating and storing identifiers of a patient, a service and caregivers.
The claim covers any use of the concept of receiving, storing and associating
the identifiers known and unknown. The receiving and associating
instructions could be performed by any means. The storing step could be
performed by any general purpose computer, existing or future-devised. The
claimed process would wholly pre-empt the receiving, associating and
storing of patient, services and caregiver identifiers and in practical effect
would be a patent on the concept itself which is an abstract idea. See
Gottschalk v. Benson, 409 U.S. at 72 (1972).
As such, we will sustain this rejection as it is directed to claim 1. We
will also sustain this rejection as it is directed to claims 2 to 7 because the
Appellant has not argued the separate patentability of these claims.

Anticipation
We will not sustain the rejection under 35 U.S.C. § 102(b) of claims 1
to 3, 8 to 10 and 15 to 17 because we agree with the Appellant that Brown
does not disclose a caregiver identifier. In this regard the disclosure of
physician instructions is not the disclosure of a caregiver identifier because
the physician instructions do not identify the physician.

Appeal 2010-001361
Application 10,654,594

6
Obviousness
We will not sustain this rejection as it is directed to claims 7, 14 and
21 because these claims like claim 1 require the storing of a caregiver
identifier which we found was not disclosed in Brown.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the prior art does not disclose the step
determining if any conflicts exist between the patient and the medication.
The Examiner relies on the teaching in White that a comparison is made
between the patient’s allergies to other medications. In the Examiner’s
view, this is a teaching of determining if any conflicts exist between the
patient and the medication. White also discloses that an operator is
prompted if a discrepancy is found. We note that Brown discloses that an
error message is sent if an error occurs in the process. As White teaches that
an operator is prompted when a discrepancy is found between the patient
and the medication and Brown discloses that an error message is sent when
there is an error in the process, we agree with the Examiner that the step of
determining if a conflict exists between the patient and medication and
sending a response if a conflict exists would have been obvious at the time
of the invention in view of the combined teachings of Brown and White.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 4. We will also sustain the rejection as it is directed to claims 5 to
6, 11, 12, 13, and 18 to 20.
Appeal 2010-001361
Application 10,654,594

7
DECISION
We sustain the Examiner’s § 101 rejection of claims 1 to 7.

We do not sustain the Examiner’s § 102(b) rejection of claims 1 to 3,
8 to 10 and 15 to 17.
We sustain the Examiner’s § 103 rejection of claims 4 to 6, 11, 12, 13
and 18 to 20.
We do not sustain the Examiner’s § 103 rejection of claims 7, 14 and
21.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED-IN-PART

mls

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528